125 Mo. 140 | Mo. | 1894
This is a suit in equity to enforce specific performance of certain agreements for the transfer of rights to patents for an invention. The petition also seeks to cancel prior transfers of such rights, already made by some of the defendants, and seeks 'to enjoin any further transfers of the interests to which plaintiffs assert title.
The plaintiffs are the Electric Secret Service Company, John T. Bussell, James M. Chaney, Alfred W. Jones, Edward L. Martin and Benjamin F. Jones.
The defendants are the Gill-Alexander Electric Manufacturing Company, Edwin B. Gill, Jr., Bobert Gillham, M. O. Gillham, and William W. Alexander.
The pleadings need not be given. The positions taken by the several parties to the controversy will sufficiently appear otherwise.
The finding and decree of the learned judge who heard the cause on the circuit furnish a general outline of the litigation, to which we shall add such further particulars as we may consider worthy of mention in developing the grounds for the conclusion reached here.
In 1884, Edwin R. Gill, Jr., then about eighteen years of age, a workman in his father’s tinshop at Pleasant Hill, Missouri, invented a certain mechanism applicable to telegraph or telephone lines, which was afterwards patented as an ‘ ‘Automatic Electric Signal-Controlling Apparatus.” Being, at the outset, without adequate means to perfect his discovery or to introduce it, Gill made a series of contracts with various persons in order to secure such means.
Those contracts form the groundwork of this suit. TJnder them, plaintiffs claim title to one half the patent rights granted to Gill, the inventor, and his assigns. The defendants deny that claim.
The principal defense, which the trial court sustained, is that plaintiffs do not show such a performance of the agreements on their part, as would warrant a court of equity to grant the relief they invoke.
The substance of these agreements appears in the finding of the trial judge.
It is evident that the written contract on March 15, 1887, has the most vital bearing on the issue of the present suit.
The parties to it were Gill and Jones. The former agreed to a number of stipulations, concerning the transfer of his interest in the patent device, and the giving of his efforts and time to its perfection, etc. The party of the second part, Mr. Jones (through whom the plaintiffs claim the right to specific performance), entered into the following agreements, by the terms of the writing referred to, viz:
“The said party of the second part hereby employs the said party of the first part for the purposes and for
From the facts found by the learned circuit judge, touching the organization by Jones and his associates of the Western Electric Lock Company, and the subser quent dealings with Gill, it is clear that the agreements above quoted were not performed.
The principal facts on which that conclusion rests are substantially undisputed.
Gill appears to have been entirely willing and ready to convey his patents to the Missouri corporation organized by Mr. Jones; but Gill firmly insisted on the payment to him of the stock and money stipulated to be paid, as declared by the foregoing agreement.
Gill-had the undoubted right to demand the performance of those conditions.
The subsequent negotiations do not, in mur opinion, amount to a waiver of his right to require performance of the conditions on which the transfer of his interest in the patent was contingent.
The law applicable to such a case is not seriously in dispute.
1. Though no question has been raised by counsel, it is proper for the court to satisfy itself of its power or
Though contracts for the sale of rights under patents may affect only personal property, we have no doubt that equity may properly take jurisdiction of them in such a proceeding as this; and, on a sufficient showing, decree specific performance.
The principal footing of such jurisdiction is the obvious inadequacy of the redress which an ordinary action at law for damages would afford, as applied to such property, in event of refusal to comply with an agreement for its sale.
Rights acquired under letters patent for inventions are of such peculiar nature that they are justly considered proper subject-matter for suits for specific performance. Corbin v. Tracy (1867), 34 Conn. 325; Binney v. Annan (1871), 107 Mass. 94.
2. Strict and literal performance of all the conditions of a contract is not invariably an essential prerequisite to a decree for specific performance.
Equity looks at the substance of transactions, and regards the spirit of an obligation rather than its mere form. So ail that is generally demanded in equity is a substantial compliance with the agreement, sought to be specifically enforced, on the part of him who asks the aid of equity to give it effect.
But where the facts show that the plaintiff has wholly failed to meet the substantial terms of the very agreement on which he relies, he can not complain if a court of equity leaves him where he has placed himself. He can not be allowed to seize the benefits of an agreement when he has discarded its burdens. This is a plain rule of fairness, that has become a maxim in this branch of the law.
An obligation worthy of exact enforcement in a court of equity should possess at least that complete
After a careful review of the facts of the case in hand we are satisfied that the findings of the learned trial judge are correct in all material respects. We affirm the judgment.